WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The North Face Apparel Corp. v. Christine Frueh
Case No. D2018-0830
1. The Parties
The Complainant is The North Face Apparel Corp. of Wilmington, Delaware, United States of America, represented by SILKA Law AB, Sweden.
The Respondent is Christine Frueh of Hallschlag, Germany.
2. The Domain Name and Registrar
The disputed domain name <northfacegreeceoutlet.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 13, 2018. On April 13, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 14, 2018, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 17, 2018. In accordance with the Rules, paragraph 5, the due date for Response was May 7, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 9, 2018.
The Center appointed Christos A. Theodoulou as the sole panelist in this matter on May 15, 2018. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
The Complainant is a company registered in Delaware of the United States of America. It was founded in 1966. It was first founded as a small mountaineering retail store. Now, it manufactures and supplies among other things outdoor exploration apparel, footwear, equipment, and accessories for men and women, according to the uncontested allegations of the Complainant. According to the uncontested allegations of the Complainant also, it has around 200 shops in Germany offering THE NORTH FACE products and around 5 shops in Greece.
The Complainant is the owner of several European Trademarks (EUTM) for the name THE NORTH FACE. The first registration for THE NORTH FACE was approved on November 27, 2000 for classes 18, 20, 22, 25. It has other EUTM registrations for THE NORTH FACE in 2002, 2005 and 2006 and a figurative mark for THE NORTH FACE registered June 15, 2007.
Further, the Complainant is the owner of among others of the following domain names, according to the uncontested allegations of the Complainant:
<Thenorthface.com> registered on October 26, 1995;
<Thenorthface.gr> registered on April 5, 2005; and
<Thenorthface.de> registered on May 4, 2005.
The disputed domain <northfacegreeceoutlet.com> was registered on November 24, 2017 long after the trademark and domain name registrations of the Complainant.
5. Parties’ Contentions
The Complainant contends that the disputed domain name is identical or confusingly similar to trademarks or service marks in which the Complainant has rights, that the Respondent has no rights or legitimate interests in the disputed domain name and that the Respondent registered and is using the disputed domain name in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Before engaging in the threefold discussion of paragraph 4(a) of the Policy, the Panel will briefly address the procedural issue relating to the default of the Respondent. The implications of a default in this case are telling since the Complainant has the burden of proof, according to paragraph 4(a) of the Policy (“In the administrative proceeding, the complainant must prove that each of these three elements are present”). As such, the Panel cannot merely grant the Complainant’s request automatically due to the default, but it has to examine instead the evidence presented to determine whether or not the Complainant has proved its case, as required by the Policy. See FNAC v. Gauthier Raymond, WIPO Case No. D2004-0881; Sonofon A/S v. Vladimir Aleksic, WIPO Case No. D2007-0668; Gaudi Trade SpA v. Transure Enterprise Ltd, WIPO Case No. D2009-1028.
The Panel shall now proceed to the analysis of the evidence in this case, based on the three elements of paragraph 4(a) of the Policy.
A. Identical or Confusingly Similar
The Complainant has presented evidence to demonstrate that it owns registered trademark rights in THE NORTH FACE.
The mere fact that the Respondent has omitted the article “The” and added the words “Greece” and “outlet” and has added the Top-Level Domain Name “.com” does not to this Panel affect the essence of the matter: the dominant elements of the Complainant’s mark are recognizable in the disputed domain name which is therefore identical or confusingly similar to the trademark of the Complainant and, in the circumstances of this case, is by itself sufficient to establish the criterion of identity or confusing similarity for purposes of the Policy, as many previous UDRP panels have found. See e.g., Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903; Koninklijke Philips Electronics N.V. v. K. Harjani Electronics Ltd., WIPO Case No. D2002-1021; DFDS A/S v. NOLDC INC, WIPO Case No. D2006-1070; American Automobile Association, Inc. v. Bladimir Boyiko and Andrew Michailov, WIPO Case No. D2006-0252.
In view of the above, the Panel finds that the Complainant has discharged its burden of proof on this point and holds that the disputed domain name <northfacegreeceoutlet.com> is confusingly similar to the Complainant’s trademark THE NORTH FACE.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a non-exhaustive list of circumstances which, if found by a panel to be proved based on its evaluation of the evidence presented, shall demonstrate a registrant’s right to or legitimate interest in a domain name. These examples are discussed in turn below, with regard to the specific facts of this case:
(i) Use or demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services prior to the dispute:
The Respondent is not making a bona fide offering of goods, for reasons discussed below.
(ii) An indication that the Respondent has been commonly known by the disputed domain name, even if it has acquired no trademark rights:
In this case, there is no such indication from the present record.
(iii) Legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademarks at issue:
Again, in this case there is no such indication from the record.
Further the Respondent does not seem to have any trademark registrations including the term “The North Face”. Additionally, it is to be noted that the Respondent did not present evidence of any license by the Complainant, with whom there seems to exist no relationship whatsoever.
Further, the Respondent seems to want to induce consumers to visit his website where he presumably offers counterfeit products and further she is using the Complainant’s copyright protected images and otherwise creating an impression of association with the Complainant, without permission from the latter, according to the uncontested allegations of the Complainant.
As a conclusion on this point, the Panel finds that the Complainant has established an uncontested, prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name, and the Complainant has satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraphs 4(b)(i) to 4(b)(iv) of the Policy mention circumstances in order to demonstrate bad faith registration and use of a disputed domain name.
According to the uncontested allegations of the Complainant, the Respondent registered and is using the disputed domain name in bad faith, in order to capitalize on the goodwill of the trademark of the Complainant and attract commercial gain by selling alleged counterfeit goods and creating a false impression of association with the Complainant.
Furthermore, the Respondent must have known of the existence of the mark because of its extensive promotion in Germany and Greece.
Finally, the default of the Respondent in the present circumstances seems to “reinforce the inference of bad faith registration and bad faith use” (The Hong Kong and Shanghai Banking Corporation Limited v. Bill Lynn, WIPO Case No. D2001-0915).
As a consequence of the above, the Panel finds that the Respondent registered and is using the disputed domain name in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <northfacegreeceoutlet.com> be transferred to the Complainant.
Christos A. Theodoulou
Date: May 17, 2018